It is not uncommon for founders of brands to use their names as the brand name. We see this across many industries such as fashion, cosmetics, F&B and retail. However not many are aware that it can be a challenge to register a person’s name as a brand name. In this article, we discuss the ongoing controversy in the Thai courts regarding personal name trade marks, and compare the registrability of names with the other Southeast Asian jurisdictions of the Philippines, Indonesia, Vietnam and Cambodia.
Thailand
The Thai Trademark Office (TMO) has over the decades rejected trade mark applications using personal names on the basis that they are not represented in a “special manner” or are non-distinctive. This applies even to internationally recognised brand names or celebrity names. As such, brand owners often appealed TMO’s decisions all the way to the Central Intellectual Property and International Trade Court (IPIT Court). However, as we highlight a few landmark cases below, appeals are never straightforward.
In 2017, the Thai Supreme Court ruled that the mark “VALENTINO”, a personal name in plain letters, was inherently distinctive and registrable (Supreme Court No.6616/2560). Essentially, the Court went on to find that the wording “represented in a special manner” applies only to the case of “tradenames” – not a personal name.
A year later, the Supreme Court went against this precedent and ruled that the mark “JENNIFER ANISTON”, also in plain letters, lacked inherent distinctiveness because it was not represented in a stylised format. We note however that the mark was eventually registerable as it has acquired distinctiveness through use (Supreme Court No. 3499/2561).
In 2023, the Supreme Court laid down another landmark decision (Supreme Court No.39/2566) overturning the “JENNIFER ANISTON” decision which the TMO has strictly followed. It ruled that the mark “CHRISTOPHER KANE” is a personal name in plain letters and is inherently distinctive. Therefore, it can be registered as a mark. Interestingly, this judgment provides a nuanced analysis of the rationale of the inherent distinctiveness provision in that a personal name can be distinctive without needing to be represented in any stylized format so long as it enables the public or users to distinguish the goods with which the trade mark is used from those goods of other traders thereby not causing public confusion, as well as not being directly descriptive of the goods claimed.
This latest landmark case may be a good sign for brand owners wishing to protect their personal names as a trade mark in Thailand. However, as the Supreme Court’s decisions have not always been consistent, brand owners may still need to keep an eye on the Supreme Court’s rulings.
We recommend that brand owners register personal names in a stylised format so that they may have a smoother registration. However this is not always possible, as with brands already trade marked elsewhere. For such situations, we would recommend brand owners collect evidence of use to show the court that their brand name has acquired distinctiveness through use.
Philippines
In contrast, the requirements for registering personal names as trade marks in the Philippines are straightforward. If the name identifies a particular living individual, the written consent of the individual must be submitted. If the name identifies a deceased President of the Philippines and the spouse is alive, the written consent of the spouse must be submitted.
Personal names are generally registrable in the Philippines as they are considered distinctive. However, objections may be raised if the mark falsely suggests a connection with persons, living or dead, or bring them into contempt of disrepute.
For example, local Filipino personality names that are registered as trade marks are “MANNY PACQUIAO”, “KENNETH COBONPUE”, “SHARON CUNETA”, “MONIQUE LHUILLIER”, and “LEA SALONGA”. Many international names like “TAYLOR SWIFT”, “MARIAH CAREY” and “BRITNEY SPEARS” are also registered.
Indonesia
Likewise, registering a personal name as a trade mark in Indonesia is relatively straightforward, and there is no requirement for it to be represented in any special manner.
A block plain letter of a name would be inherently registrable as long as it is not descriptive to the goods and/or services applied for.
However it is worth noting that a trade mark application that constitutes or resembles a name or abbreviation of the name of a famous person, regardless of their nationality, will be refused unless the applicant has written consent from said person.
Examples of famous people who have registered their names as trade marks in Indonesia include “PARIS HILTON”, “BEYONCE” and “TRUMP”, as well as “LUNA MAYA”, the name of a famous Indonesian actress.
Interestingly, common Indonesian names such as “BUDI” and “DIMAS” are also registered in various classes.
Vietnam
Vietnam currently has no specific regulations when it comes to registration of a person’s name as a trade mark, and the Intellectual Property Office of Vietnam (IP Vietnam) is not overly stringent when it comes to approving trade mark registrations of personal names.
However, there may be restrictions if it is identical with or confusingly similar to real names, aliases, pseudonyms of leaders, national heroes or famous personalities of Vietnam or foreign countries, names of characters in another person’s work under the scope of copyright protection that were widely known before the filing date without the owner’s permission.
The application may also be refused if it deceives consumers about the origin of products or services. However, this may be circumvented if the applicant submits evidence showing they are the person named in the trade mark, or have permission to use that name.
For example, the names of many individuals in standard font (without any stylization) have been successfully registered in Vietnam without any office action, such as “ELIZABETH LISA” in Class 3 in the name of Shenzhen Saixingtong Technology Co.Ltd (Reg. 4-466718-000), “BRITNEY SPEARS” in Class 3 in the name of Baby One More Mark, LLC (Reg. 4-0339702-000), “RALPH LAUREN” in Class 3 in the name of THE POLO/LAUREN COMPANY, L.P. (Reg. 4-0256649-000), “JOHN HENRY” in Class 35 in the name of Central Trading Co., Ltd. (Reg. 4-0339873- 000).
Personal names that contain Nguyen (Nguyễn), the most popular Vietnamese surname with about 40% of the Vietnamese population with this surname, have also been approved for trade mark registration provided that it is combined with different first names, for example, “DANG NGUYEN” vs. “DUONG NGUYEN”. However, if the first and middle names are very similar to each other, for example “THANH TUNG” vs. “PHAN THANH TUNG” (in which PHAN is the surname, TUNG is the first name and THANH is the middle name), they may not be approved.
Cambodia
A name of a well-known person, either local or international, is generally registrable if evidence of permission to use the name, or a legitimate connection with the applicant, is provided. The reason being that the public may be misled and believe that the goods or services are connected with the famous person. For example, registration in Cambodia of the mark “CHRISTIAN LOUBOUTIN” of French fashion designer named Christian Louboutin.
Personal names (first, last, middle, etc. or combination of either) are usually registerable. However, very common Cambodian surnames are not generally considered capable of being distinctive and therefore not registrable. The commonness of a surname is determined by the number of listings in a Cambodian telephone directory according to the Department of Intellectual Property Rights (DIPR). The chances for registrability would increase if the Cambodian surname is combined with an unusual given name, or when the names being registered are in stylized form or with any stylized elements.
The content of this article is intended to provide a general guide to the subject matter. Please reach out to us for advice about your specific circumstances.
Authors: Pakaimas Wongwiwatwaitaya, Claire Corral, Yurio Astary, Dimas Heldian, Tue Do, Sreymom Mao.
